Appeal No. 2004-0949 Application No. 09/528,986 reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Here, the examiner does not explain how each and every element recited in claim 1 is disclosed by Wakabe. In particular, if charge-discharge lead 102 corresponds to appellant’s claimed thin film, and if cutting device 103 corresponds to the claimed shielding member, the examiner does not explain what component in Wakabe is the closure cap. Also, once the thin film 102 is punctured, cutting device 103 is no longer located between the thin film and the generator element. Hence, the examiner has not met his burden. Id. The examiner’s obviousness rejection fails to explain how modification of Wakabe (regarding the above-mentioned deficiencies) would have been obvious. In view of the above, we therefore reverse the anticipation and obviousness rejections of claims 1-8 over Wakabe. II. The Obviousness Rejection over Matsushita We refer to pages 4-5 and 7 of the answer regarding the examiner’s position for this rejection. We observe that the examiner states that Matsushita does not teach “a cover hole to be covered with a thin film”. Yet, the examiner states that “[i]t would be obvious to one skilled in the art at the time the invention was made to include a shielding member for preventing the liquid electrolyte of a battery from exiting the cell or coming into contact . . .”. Answer, pages 4-5. Hence, the examiner recognizes a deficiency found in Matsushita (a cover hole to be covered with a thin film). Yet, the examiner does not explain how this deficiency is made obvious; rather, the 5Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007